News & Updates

Trademark Videos on Demand

June 30, 2010

In case you don’t have enough videos to watch, the United States Patent and Trademark Office (“USPTO”) launched a portion of its new Trademark Information Network where anyone can view news broadcast-style videos on its website that cover important topics and can teach you about the various phases of the trademark registration process. The site, which is not yet fully populated, will provide video walk-through of the entire trademark application process. Examples of the videos that will be available include:

Before You File – overview of the most important issues you should be aware of when filing a trademark application, including trademark availability searching, ownership information, differences between drawings and specimens, identifications of goods and services, and filing bases.

Searching – use of the Trademark Electronic Search System (TESS) and an overview of the system and tips for how to use the system effectively.

Applicant Information – focuses on what is meant by the term “applicant.”

Drawing Issues – focuses on what is meant by the term “drawing” and how to comply with the requirements for submitting a drawing to the USPTO.

Goods and Services Issues – focuses on identifying the correct “goods and services” for filing in association with your application.

Basis Information – provides specifics about the filing requirements for both Section 1(a), Use-in-Commerce, and Section 1(b), Intent-to-Use-in-Commerce, filing bases.

Specimen Issues – provides examples of acceptable specimens and highlights the differences between a “drawing” and a “specimen.”

After You File – provides an overview of the most important issues you should be aware of after filing your application. It covers such topics as using the USPTO’s electronic resources to keep your application current, who to contact with questions, and what you must do to avoid abandonment.

Post-Registration Issues – provides an overview of the most important issues you should be aware of after your application has matured into a registration. The video explains the required maintenance documents that you must file to keep your registration alive, as well as discusses an optional filing to enhance the legal strength of your registration.

The Anchor in the videos is the Trademark Information Network’s Mark Trademan. We will leave it to you as to whether his name is either a great coincidence or an attempt at humor.


ICANN Going Global

February 12, 2010

ICANN (the body responsible for regulating domain names) is expanding the domain name system to better reach an international audience.  Domain names consisting of non-latin characters, including Chinese, Arabic, and Hebrew, are now permitted.  The program enables countries and territories that use languages based on scripts other than Latin to offer their users domain names in non-Latin characters.  The domain names are currently available only to governments and administrations of countries and territories.  However, it is expected that ICANN will eventually expand the program beyond government entities.  There are a number of requirements which must be met before the domain name will be issued, including a demonstration that the domain name constitutes a meaningful representing of the corresponding country or territory name.

To learn more about the program, you can access ICANN’s website at www.icann.org.


ICANN Set to Expand Domain Name Space

November 4, 2009

ICANN (the body responsible for regulating domain names) is planning to expand the domain name system to better reach an international audience.  Domain names consisting of non-latin characters are currently set to be launched on November 16, 2009.  These characters will include Chinese, Arabic, and Hebrew.

In addition, ICANN is considering removing the cap on the current number of generic top level domains (gTLDs) (e.g., .com, .net, .gov) to allow for an unlimited number of gTLDs.  The current proposal would allow applicants to register domain names with any extension such as “.car”, “.restaurant”, or “.movie”.  Given the proposed opening of this new online frontier, ICANN will attempt to address current brand owner’s concerns by implementing a “sunrise” period which would allow verified mark owners first access to domains including their mark as well as expanded WHOIS listings and dispute resolution policies.  ICANN is currently accepting comments on these proposed policies.

In the event ICANN’s proposed policies are adopted, we will likely see a flurry of activity as brand owners seek to protect their brands and third-parties seek to establish their place in this newly opened space.  However, given the nearly unlimited number of combinations, prioritization will almost certainly be a key strategy.


Piracy: From Swords and Cannons to a Mouse and Keyboard

September 9, 2009

How would you like to drive a Ferrari, wear the latest Gucci shoes, or perhaps own an expensive Rolex watch?  Conversely, how would you like to see copies of your own products being sold online by someone else, for a profit?  It’s all happening, in a virtual world of course, and for a lot less than you would expect.  A virtual world is an online environment in which users are free to interact with other users around the world through “avatars,” or digital personas which they create.  Not only do users converse with one another as they move about in these virtual worlds, they may also own land, purchase and exchange goods and services, and run a business.

As the numbers of users operating businesses within virtual worlds for real world profit increases, so do the concerns about the protection of intellectual property rights within them.  Second Life (SL), the most popular virtual world, currently has over 4.5 million users and is attracting a bustling commercial economy.  SL distinguishes itself from other virtual-world games by giving its members intellectual property rights to the content that they create in SL.  However, the most interesting feature of SL is that its virtual currency is freely exchangeable for real world currency.  This effectively ties the economic activities that occur within SL to the real world.  In fact, within the past year, the Federal Bureau of Investigation entered SL to conduct an investigation into illegal gambling operations on SL.  It is currently estimate that roughly 3-5% of all transactions in Second Life involve goods which make an unauthorized use of the trademark of another.  While this number might seem insignificant, it amounts to millions of transactions annually and at least $2 million in total value.

Given this rampant sale of counterfeit virtual goods, how long can a trademark holder stand idly by?  Trademark owners are obligated to defend their marks or risk losing them.  As a result, it stands to reason that they should be actively policing their marks within these virtual worlds. Unfortunately, that is much easier said than done, as a new storefront can be easily set up overnight.  While Linden Labs will accept complaints of copyright infringement and will “take-down” content deemed to be in violation, this does not put a stop to trademark infringement.  Additionally, other legal questions, such as whether or not the “virtual goods” composed of electrons sold within these virtual worlds are “counterfeit” real world goods remain unclear.

While many believe that the SL user base is too small to warrant attention, others view this as an opportunity for trademark holders to get in on the ground floor and protect their core mark(s) within a growing part of the Internet, similar to the domain name rush of the mid 1990s.  In a recent effort to combat counterfeiting, several trademark holders, such as the Coca-Cola Co., Toyota Motor Co., Herman Miller, Inc., and others have established a presence within SL to promote their real world products by providing authorized virtual goods.  From another perspective, users who began their business and have built their brands wholly within these virtual worlds are now turning to trademark law to protect their rights.  Recently, a designer of content for Second Life won a federal trademark registration for her avatar and brand “Aimee Weber.”

Companies interested in protecting their core mark(s) should consider filing a trademark application pertaining to “virtual” goods and/or services.  Currently, the law in this area is developing and the Trademark Office isn’t sure how to deal with such applications where no “real” goods exist.  As a result, a successful application requires careful drafting.  Obtaining a registration may also require that you are involved in a virtual world using the mark.  Such a use could include establishing and maintaining at least a minimal virtual presence within a virtual world in order to properly claim use of the mark in commerce with respect to “virtual” services.

It has yet to be seen how quickly IP protection and enforcement will adapt to virtual worlds.  However, if the commercial impact of these virtual worlds continued to grow, then high profile trademark holders would be well served to invest in promoting their products and securing their rights within these virtual worlds as early as possible to discourage unauthorized and improper use and ward off a potentially larger problem in the future.


Higher Standard to Prove Fraud on the Trademark Office

September 9, 2009

The Federal Circuit recently reversed a decision by the Trademark Trial and Appeal Board (TTAB) involving fraud on the Trademark Office.  The TTAB had ruled that the registrant committed fraud in renewing its trademark registration by maintaining goods in the registration that it no longer manufactured.  In this and numerous pervious cases, the TTAB had been equating a “should have known” standard with subject intent to defraud.  The Federal Circuit held that, in using this test, the TTAB had “erroneously lowered the fraud standard to a simple negligence standard.”  The Federal Circuit further held that proof of intent to deceive is required to establish fraud.  In this particular situation, the Federal Circuit found no evidence of an intent to deceive the Trademark Office and reversed the TTAB’s decision canceling the registration.  However, the Federal Circuit did note that the registration needs to be restricted to the appropriate goods.  In re Bose Corp., Appeal No. 2008-1448 (Fed. Cir. 2009).


The Importance of Conducting Post-Registration “Fraudits” of Trademark Registrations

July 29, 2009

The Trademark Trial and Appeal Board (TTAB) has ruled, precedentially, that the correction of a false statement regarding use of a trademark in commerce, if made before a registration has been challenged, creates a rebuttable presumption that the registrant did not intend to commit fraud. As background, a trademark applicant must file a statement with the Trademark Office alleging that the applicant’s mark is being used in interstate commerce with the specified goods and/or services identified in the trademark application before a trademark can be registered. Such statements are also required to be made post-registration as part of the renewal process of a trademark registration. In this particular case, the registrant corrected its registrations by omitting the unused items from the Section 8 Declaration. This encouraging decision from the TTAB makes it vitally important to continually review trademark registrations to ensure that each good or service named in the registration is being used in commerce and, if not, remove such items from the registration before the registration is challenged. Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2008) [precedential].


Tips to Avoid the Pitfalls for Madrid Protocol Trademark Applications

June 16, 2009

While the recently enacted Madrid Protocol System allows trademark owners to seek protection for their respective marks in multiple countries by filing a single application, there are some pitfalls to avoid.

For large-scale coverage of your trademark in many countries, you may want to consider filing an application for an international Madrid Protocol trademark registration. Benefits of the Madrid Protocol registration include the filing of a single application designating many countries, one expiration date, and one place for renewal and for filing changes of names/addresses, license agreements, assignments, etc. As long as the application meets all formal requirements, the filing date of the Madrid Protocol application is the date of registration. The cost of a one-class application filed directly with all 78 Madrid Protocol countries would be around $70,000 US, whereas a Madrid Protocol application designating all the member countries is only about $18,000 US.

However, a few issues have been encountered with the Madrid Protocol system.

* An application must be based on a valid home (e.g., United States) application or registration. (The international registration is dependent on the home application for five years, after which it stands alone.)
* The classification and identification of goods/services in the international application must be identical to the home application. This can create problems if not considered ahead of time, because an acceptable goods and services identification internationally varies somewhat from an acceptable goods and services identification in the United States.
* Some foreign trademark offices will correspond directly with the client, even though a foreign agent has been retained.
* Notifications of partial or total refusal from designated countries are transmitted to the International Bureau and then to the foreign agent, in some cases leaving a short time between receipt of the Notification and the deadline for responding.
* Some countries publish the Notifications, giving rise to solicitation letters from foreign associates. To respond to the Notifications, the services of a foreign agent must be secured.

Strong consideration can be given to the Madrid Protocol system if you desire widespread trademark coverage, especially where cost is a concern. Many countries automatically extend the international registration into their country without further examination. Even though a foreign associate may be needed for responding to a refusal, cost savings can still be realized at the filing stage.

Please contact us if you are interested in further information regarding the Madrid Protocol.


Doctrine of Foreign Equivalents

June 1, 2009

The Federal Circuit recently reversed a Trademark Trial and Appeal Board (TTAB) decision affirming an Examining Attorney’s refusal to register the mark MOSCOVSKAYA as primarily geographically deceptively misdescriptive. In Russian, MOSCOVSKAYA means “from Moscow.” The Examining Attorney relied on the Doctrine of Foreign Equivalents which is a guideline providing that foreign words from modern languages be translated into English when it is likely that the ordinary American purchaser would stop and translate the foreign word into English. The third prong of the test for primarily geographically deceptively misdescriptive is that the misrepresentation is a material factor in the consumer’s decision. Joining the Doctrine of Foreign Equivalents and the 3rd prong of the test, the TTAB found that Russian speakers are an appreciable number of consumers and found that the mark met the materiality test of the 3rd prong based on the deception to Russian speakers. The Fed. Cir. ruled that the materiality test requires that a substantial portion of the relevant consumers is likely to be deceived, not whether any particular segment (Russian speakers) is likely to be deceived. The Fed. Cir. went on to state that Russian speakers may in fact be a substantial portion of the intended audience, but this needs to be considered by the TTAB on remand. We will have to wait and see if this decision will expand to other trademark principles (likelihood of confusion, descriptiveness, surnames, etc.) or be limited to primarily geographically deceptively misdescriptive refusals? In re Spirits International, N.V., Appeal No. 2008-1369 (Fed. Cir. April 29, 2009).


Family-of-Marks Argument Not Available Against Likelihood of Confusion Refusal

May 26, 2009

In a recent Trademark Trial and Appeal Board (TTAB) decision, the Applicant attempted to register the mark CYNERGY and in response received a section 2(d) likelihood of confusion refusal in light of a prior registration for SYNERGIE PEEL. In responding to the rejection, the Applicant argued that familiarity with its family of marks would cause consumers to pronounce the mark with a long “I”, rendering the mark sufficiently different from the cited registration. The TTAB held that a family-of-marks argument is not available in seeking to overcome a likelihood of confusion refusal. Further, the TTAB dismissed the Applicant’s remaining arguments, holding that the marks and goods are sufficiently similar and that sophisticated consumers may still be confused. In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009) [precedential].


Another Loss for the New England Patriots

May 11, 2009

The Applicant in this case filed an application for “19-0 THE PERFECT SEASON” on November 8, 2007, seeking registration on the Supplemental Register, and amended the application on April 22, 2008 to seek registration on the Principal Register. In the meantime, the Patriots filed an intent-to-use application on January 17, 2008, for the same mark for registration on the Principal Register. The Patriots opposed the Applicant’s mark. To succeed in the opposition, the Patriots needed priority and thus attempted to knock out the prior application. The Patriots argued that the Applicant had admittedly not used the mark by its first filing date for registration on the Supplemental Register and did not specify use-in-commerce as the filing basis, and the application was void on those bases. In response, the TTAB held that the prior application met all the requirements to receive a filing date and the Patriots were attempting to conflate the requirements for filing a trademark application with the requirements for registration. The TTAB commented that applicants are allowed to add missing information to an application without losing the original filing date. Kraft Group LLC v. William A. Harpole, Opposition No. 91185033 (TTAB 2009) [precedential].

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